initial "inventor" interview (practical legal and business considerations)

Initial "Inventor" Interview (Practical Legal And Business Considerations)

Greg Allen3M Innovative

Properties Company

11

August 26, 2010AIPLA’s Practical Patent

Prosecution Training for New Lawyers

22

Business Purpose

“Invention”

Claimed Invention

Prior Art

World Leader In Precision Lenses For Industrial Applications

Business

33

Investigator InterviewBrief description of the patenting process– Including timeline

Costs/Fees

Potential Bar Dates– Disclosure– Sale/Offer For Sale

Proposed Filing Date

44

Investigator InterviewInvestigator InterviewAny IP Agreements involved?

For example• Confidential Disclosure Agreement• Joint Development Agreement• License Agreements• Government R&D Contracts

55

66

Business Purpose

“Invention”

Claimed Invention

Prior Art

Investigator InterviewWhat is the “invention”?

Does the “invention” address a problem?

Advantages of the “invention”

77

Investigator InterviewArt– How well does the client know the art?

Has any searching been done? What type and amount of searching done Patents/Publications Products

– Client’s– Others

Disclosures by client to a third party Third party information received

– With confidentiality agreement– Without confidentiality agreement

Pending applications

88

Investigator Interview

How is the “invention” different from the art?

99

Investigator InterviewWhat is the client’s business purpose for pursuing patent protection?–Wants/Needs

Strategic Plan

Competitors– Who are they?– What do they sell?– How do they sell it?

1010

Glass

1111

Glass-Ceramic

Specific Compositions• Required Components• Optional Components• Amounts

Properties• Transmittance• Infrared (IR)•Visible •Ultraviolet (UV)

• Hardness• Ts

• Tg

Lenses

Equipmentw/ Lenses

Specific Compositions

Properties

Other Articles

Articles

1212

Business Purpose

“Invention”

Claimed Invention

Prior Art

Investigator InterviewDraft or outline claims– Draft or outline independent claims

Categories– Draft or outline dependent claims

Reasons for dependent claims Additional patentable features/limitations Claim differentiation Product related features and limitations Other

1313

1414

Business Purpose

“Invention”

Claimed Invention

Prior Art

1515

§101(Subject

Matter)§103

§102

§§ 111, 115, 116

(Inventor(s))§112, 2nd ¶

§112

, 1st ¶

§101 (Utility)

§ 113 (Drawing) Claim

What work has been done?– Examples; will working examples be necessary?– Are any third parties involved?– Are any trade secrets involved?

Client’s trade secrets Third party trade secrets

1616

Investigator InterviewInvestigator InterviewWho’s been involved?Who’s been involved?

What needs to be done?/Who will do it?/When does it need to be done?What needs to be done?/Who will do it?/When does it need to be done?– Is additional searching needed?Is additional searching needed?– Are additional working examples needed?Are additional working examples needed?– Application draftingApplication drafting

ClaimsClaims DefinitionsDefinitions BackgroundBackground DrawingDrawing

– Figure(s)Figure(s)– Description of the Figure(s)Description of the Figure(s)

Detailed DescriptionDetailed Description ExamplesExamples Summary Summary AbstractAbstract Other?Other?

1717

1818

Business Purpose

“Invention”

Claimed Invention

Prior Art

1919

§101(Subject

Matter)§103

§102

§§ 111, 115, 116

(Inventor(s))§112, 2nd ¶

§112

, 1st ¶

§101 (Utility)

§ 113 (Drawing) Claim

QuestionsQuestions

2020